FAQs ON TRADEMARK REGISTRATION

To help people and occupational entities located in India and interested/engaged in various sectors of occupation and economy, provided below are very informative and useful pieces of information regarding the registration of their respective trademarks or service marks in India and countries worldwide.

Q.1 WHAT IS A TRADEMARK OR SERVICE MARK?

Any specific mark or indicator which is unique enough to distinguish a product of a company from those of all other companies in the same field of business and within the concerned jurisdiction market, is generically termed as a "trademark". These all facts get applied also to a service mark, provided the basic fact that a "service mark" distinguishes the service(s) of a service-providing company. Thus, a trademark or a service mark, is undoubtedly one of the most important and vital intellectual properties of business/professional/service entities engaged in various economic sectors, for doing a business of prominence and profits. For example, Coca-Cola and Citibank (service mark for Citibank) serve as a trademark and a service mark, respectively. The types and classes of trademarks and service marks are expounded under the pertinent question below.

Q.2 IS IT MANDATORY TO REGISTER A TRADEMARK?

No. Registration of a trademark or service mark is optional and not compulsory. However, registering a trademark/service mark offers to the owner of the mark a wide range of benefits and advantages, which are listed just below. In India, proper registration of a trademark/service mark is achieved with support of any zonal office of Trademark Registry acting as per the provisions and rules of the TRADEMARKs Act of 1999 and the TRADEMARKs Rules of 2002, and all amendments made thereto so far.

Q.3 WHAT MANY RIGHTS AND BENEFITS ARE OBTAINABLE AFTER REGISTRATION?

The most significant, lavish, and elusive advantages and benefits obtainable by the owner of a trademark/service mark, are the following:

Exclusive ownership over the registered trademark within the jurisdiction concerned

The privileged legal rights to use the registered mark in the business/service of the product or service specified in the application

Hiring or leasing of the registered trademark or service mark

Registration can be used as a strong basis for registration of the mark in foreign countries

And, take all necessary measures to protect his unique identity and reputation in the entire native jurisdiction, including taking rigorous legal action against trademark infringement cases in future.

These exclusive rights and benefits are not available to the user/owner of a trademark or service mark which is not registered.

Q.4 WHERE TO REGISTER A TRADEMARK?

For getting a trademark or service mark duly registered in India for doing a nationwide business in the specified field/class, the owner of the mark require to file the application for registration [in Form TM-1] with the directly concerned regional trademark office, based on the location of him or his company. In entire India, there are five regional office of the trademark registry in Mumbai, Kolkata, Chennai, Delhi, and Ahmedabad. And, in order to expand one's business to foreign countries, the owner of the mark will be required to get registration of the mark in the targeted foreign countries as per the provisions and rules of the relevant international conventions related with trademarks described below somewhere.

Q.5 WHAT ARE THE TYPES AND CLASSES OF TRADEMARKS/SERVICE MARKS?

The most common broad categories of trademarks and service marks in India and abroad are the following --- Product marks; Service marks; Collective marks; and Classification marks. These distinctive marks may contain one or more of the following:

Any distinct word or letter, numeral, graphical figure, certain wording or phrase, sign or signature, slogan or punch line, picture, logo, or any other distinguishing indication, or a unique combination of many of these.

Any two-dimensional or three-dimensional configurations or shapes of the goods or products

Any distinct color or a certain combination of many colors

Any particular sound, smell, or taste.

Again, the trademarks and service marks are also classified based on the goods/products or services of certain industries and economic fields, they are used for. The internationally recognized NICE Classification of goods, products, and services has identified 45 broad classes of trademarks and services marks which are used in the businesses and services of various sectors of economy in the majority of countries worldwide. This globally famous classification used for the purpose of registration of marks is administered and regularly updated by WIPO. India does follow this Nice Classification in connection with registration of marks. Out of these 45 classes, eleven belonging the services delivered in diverse service sectors, while the remaining 34 pertain to good and products produced in various business fields. Again, here it may also be mentioned that any trademark or service mark is registered only under the specified class(es) which correspond(s) to your business.

Q.6 WHAT ARE THE PROCESSES INVOLVED IN TRADEMARK REGISTRATION?

The very first official process for getting a trademark or service mark registered is to file the prescribed application for trademark registration with the relevant trademark registry office, under the class which corresponds to your business/service. This process is to be done after the tasks of trademark creation and trademark search. The Trademark Search is conducted through the trademark databases of the concerned country, to check and verify indisputable originality and uniqueness of the newly created trademark or service mark; and therefore, this task is necessary to perform prior to filing the application, in order to minimize the chances of official rejection, trademark opposition, or allegation of trademark infringement.

Other processes or stages involved in the entire procedure for trademark registration are the following ---- official examination and verification; meeting the requirements/suggestions of the examiner/registrar; publication of the proposed trademark/service mark in the Indian TRADEMARKs Journal; dealing with the possible case of a trademark opposition; and then, Trademark Prosecution if required for Registration. These all processes may take a period varying from 12 - 18 months, or even more in certain complicated cases.

Within this time-period till getting the certificate of registration, the applicant may use the ™ symbol beside his trademark concerned. The ® symbol can be used by the proprietor/owner only after getting the registration certificate.

Q.7 HOW LONG IS THE REGISTRATION OF A TRADEMARK VALID?

The (initial) registration of a trademark/service mark is valid only for a period of 10 (ten) years, counted from the date of its registration. Hence, the owner of the registered mark mandatorily requires to renew the registration of the same, well within the expiration of this ten-year period, in order to wield the full gamut of trademark rights (mentioned above) for another 10 years. The renewal application is filed through the form TM-12, along with the prescribed fees, with the relevant regional office of the trademark registry.

Q.8 WHAT IS THE DIFFERENCE BETWEEN THE SYMBOL® AND SYMBOL ™?

The symbol® can only be used beside a registered trademark in superscript style as is shown. Using this symbol ® without getting the related trademark registered is illegal. On the other hand, the symbol ™ may be used beside an unregistered trademark mainly to show authority over the trademark before proper registration of the trademark. Hence, the symbol ™ is often used beside an unregistered trademark in superscript style, especially during the time-span lying between the filing of the same and before its registration.

Q.9 WHAT ARE THE TREATIES OR CONVENTIONS FOR INTERNATIONAL REGISTRATION OF THESE?

For getting a trademark/service mark (which has already been registered in India) registered in certain targeted foreign countries, the owner of the trademark requires to file an application with any of the following globally famous international treaties and conventions related with trademarks and other assets of intellectual property, which is directly related with the desired foreign country ---- the TRIPS Agreement of WTO; the Madrid Protocol of WIPO; the Berne or Paris Convention; and the European Community Trademark (CTM) of the European Union. At present, each of these international treaties or conventions has numerous member countries as parties; and thus, registration of the mark in any one or all member countries is achievable through filing just a single application for trademark registration with the relevant international treaty/convention. Here, it is noteworthy that India is signatory to the most of these treaties related with intellectual property.

Q.10 WHAT IS TRADEMARK INFRINGEMENT?

The trademark infringement is an instance of using the registered trademark of another person/entity, or a mark objectionably similar to it, without a legal authorization from the registered owner to do so, mainly for the purpose of commercial/financial benefits. Under any such situation, the true owner of the registered trademark may sue against the person/entity committing trademark infringement, supported by convincing evidences. The usual outcome of any trademark infringement litigation consisted of a prompt injunction on the continuance of infringement activities by the said infringer, and recovery of financial and commercial losses and damages from the infringer.

Q.11 HOW CAN I KEEP MY REGISTERED TRADEMARK UNIQUE AND PROTECTED?

To keep your duly registered trademark/service mark entirely unique and well-reputed in the Indian jurisdictions, you may consider the following tasks or activities always:

Punctual renewal of trademark registration

Reading regularly the Indian TRADEMARKs Journal

Availing the Trademark Watch and Monitoring services of any renowned law firm

Remaining alert to notice cases of trademark infringement

Promptness to file Trademark Opposition (TM-5), if need be.

Q.12 IS A TRADEMARK REGISTERED IN INDIA VALID IN FOREIGN COUNTRIES ?

Every country has its own certain rules and provisions regarding registration and regulation of trademarks and service marks. Hence, the Indian registration of a trademark/service mark may not be completely valid in foreign countries. However, this Indian registration shall serve as the basis of the registration of the trademark/service-mark in the desired countries. The International Treaties and Conventions related with trademarks and service marks will help lots in this respect.

Q.13 CAN THE OWNERSHIP AND RIGHTS OVER A REGISTERED TRADEMARK BE TRANSFERRED TO ANOTHER PERSON OR COMPANY ?

Yes, of course. The owner of a registered trademark may transfer the ownership of the trademark and all the rights associated with it, to another person or company. However, for legal security, the written assignments in this connection must be made recorded with the relevant trademark registry office of India.

Q.14 SHOULD I GO FOR TRADEMARK REGISTRATION OF MY COMPANY NAME, WHICH IS ALREADY REGISTERED UNDER THE COMPANIES ACT ?

It is better and beneficial to register your company name under the Trade Marks Act also, especially when you like to use the name in the business of your products/services. This will not only give complete ownership or monopoly over the name, but will also offer the full gamut of rights associated with a trademark/service-mark.

Q.15 HOW TO ENSURE THAT MY PROPOSED TRADEMARK/SERVICE-MARK IS UNIQUE AND READILY REGISTRABLE ?

To ensure that your newly-created trademark/service-mark is indisputably unique and hence readily registrable with the relevant office of Trademark Registry, you need to conduct a comprehensive search (known as the Trademark Search) through the databases of both the previously registered trademarks and service-marks, and the filed/pending trademark applications seeking registration with the trademark registry. The trademark/service-mark classes of your concern or interest should be given priority while making the trademark search. Striking or confusing similarity with any trademark/service-mark of other entities, makes your trademark/service-mark objectionable.

Q.16 MAY I REGISTER A TRADEMARK/LOGO UNDER THE COPYRIGHT ACT ALSO ?

To avail complete and exclusive authority/monopoly over and certain unique representation of your trademark/logo, you may register the same under the jurisdictional Copyright Act also..

To know more about or avail our expert legal services for the creation, registration, maintenance, and complete protection of trademarks and service marks in India or abroad, or these tasks associated with other assets of intellectual property, please call over: +91-8800-100-281; or cast a sincere mail to: Contact@TrademarksIndia.net ; from any place of India or the world.